brooks automation v. telemark

8/3/2019 Brooks Automation v. Telemark

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1 Erik R. Puknys (Bar No. 190926)Wesley B. Derrick (Bar No. 244944)2 FINNEGAN, HENDERSON, FARABOW,GARRETT & DUNNER, LLP3 3300 Hillview AvenuePalo Alto, California 943044 Telephone: (650) 849-6600Facsimile: (650) 849-66665 Linda Thayer (Bar No. 195115)6 FINNEGAN, HENDERSON, FARABOW,GARRETT & DUNNER, LLP7 55 Cambridge Parkway, Suite 700Cambridge, MA 021428 Telephone: (617) 452-1680Facsimile: (617) 456-16669 Attorneys for Plaintiff10 BROOKS AUTOMATION, INC.11

CONFIRMATION COp

E-filing121314

UNITED STATES DISTRICT COURTNORTHERN DISTRICT OF CALIFORNIA

1516 BROOKS AUTOMATION, INC.,1718 v.19 TELEMARK. INC 202122

Plaintiff,

Defendant.

cv 11 5778COMPLAINT FOR PATENTINFRINGEMENT, FALSEADVERTISING AND UNFAIRCOMPETITIONJURY TRIAL DEMANDED

23 Plaintiff Brooks Automation. Inc. ("Brooks" or "Plaintiff') for its Complaint against24 defendant Telemark. Inc. (''Telemark'' or "Defendant") alleges:2526 1.

THE PARTIESPlaintiff Brooks is a United States corporation organized and existing under the laws

27 of Delaware, and having its headquarters and principal place of business at 15 Elizabeth Drive,28 Chelmsford. Massachusetts 01824.

COMPLAINT FOR PATENT INFRINGEMENT,1 FALSE ADVERTISING AND UNFAIR COMPE1TI10NCase No.


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1 2. On information and belief, Defendant Telemark is a corporation organized and2 existing under the laws of California. with its headquarters and principal place of business at 18013 SE Commerce Ave., Battle Ground, WA 98664-8963.4 3. On information and belief, Telemark has operated a place of business and5 manufacturing facility under the name Telemark Cryogenics at 52 Leveroni Court, Suite D, Novato.6 California 94949.789 4.

NATURE OF THE ACTIONThis is an action for patent infringement arising under the laws of the United States

10 relating to patents, including, but not limited to 35 U.S.C. 271, false advertising under the federal11 Lanham Act, including 15 U.S.C. 1125(a), and unfair competition under California Business &12 Professions Code 17200. 17500. et seq.13 5. On information and belief, Telemark has infringed and continues to infringe, induce14 others to infringe, and/or contribute to the infringement of U.S. Reissued Patent No. 40,627 (''the15 '627 Patent") assi$lled to Brooks, also referred to herein as the "Brooks Patent."16 6. Brooks also brings this action seeking equitable relief and damages from Defendant's17 false and misleading claims made in commercial advertisements about Defendant's products.18 Defendant's false and misleading advertisements are likely to deceive consumers and lessen the19 goodwill associated with Brooks and its products to Brooks's irreparable detriment.202122 7.

.JURISDICTION AND VENUEThis action arises under the patent laws of the United States, 35 U.S.C. 1 et seq.,

23 including 35 U.S.C. 271, and the trademark laws of the United States including Section 43(a) of24 the Lanham Act, 15 U.S.C. 1125(a). This Court has subject matter jurisdiction pursuant to 2825 U.S.C. 1331 and 1338(a).26 8. Personal jurisdict ion and venue are proper in this District pursuant to 28 U.S.C.27 1391 and 1400(b) because, on information and belief. Defendant has maintained a place of28 business in this judicial District, and a substantial part of the events that give rise to this action

2COMPLAINT FOR PATENT INFRINGEMENT.

FALSE ADVERTISING AND UNFAIR COMPETITIONCase No.


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1 occurred in California and within this District Upon information and belief, Defendant has2 transacted business in this District by making, using, offering for sale, and selling infringing3 products in this District4 9. This Court has supplemental jurisdiction over Plaintifrs state law claims pursuant to5 28 U.S.C. 1367 because those claims are so related to its federal claims that they form part of the6 same case or controversy and derive from a common nucleus of operative facts.7 FACTUAL BACKGROUND8 10. Brooks is a leading provider of automation, vacuum and instrumentation solutions to9 the global semiconductor and related industries. Brooks manufactures and sells Polycold cryogenic

10 refrigeration systems featuring patented cryogenic refrigeration technology to provide the highest11 quality closed-loop Cool Solutions systems available in the market today. These state-of-the-art12 systems are used in applications spanning a broad range of markets-from semiconductors, optical13 networking, and flat panel displays through detector cooling for aerospace, telescopic and laboratory14 requirements to web. decorative and ophthalmic coatings. Brooks offers "green" products that are15 globally compliant with environmental regulations. In particular. Brooks' products do not contain16 hydrochlorofluorocarbons (HCFCs). according to the terms of the Montreal Protocol and its17 amendments.18 11. In addition. Brooks sells replacement refrigerant gas charges for its Polycold19 cryogenic refrigeration systems. The gas charges Brooks sells contain a refrigerant blend covered by20 the Brooks Patent21 12. Telemark manufactures and sells cryogenic systems that are in competition with22 Brooks's P o l y c o l l ~ systems. Specifically, Telemark makes, uses, sells, offers for sale water vapor23 cryotrap refrigeration units under the model numbers TVP-1000 and TVP-2000. On information and24 belief, Defendant Telemark also makes, uses, sells, and offers for sale cryogenic refrigerants for use25 in cryogenic refrigeration units such as the TVP-l000 and TVP-2000. On information and belief,26 Defendant Telemark also makes, uses. sells. and offers for sale cryogenic refrigerants that are27 designed for use in and being used in Brooks's Polycold refrigeration units.28

3 COMPLAINT FOR PATENT INFRINGEMENT.FALSE ADVERTISING AND UNFAIR COMPETITIONCase No.


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1 13. On information and belief, Defendant Telemark has made, used, sold, offered for2 sale, anellor imported products in and into the United States, and continues to make, use, sell, offer3 for sale, and import products in and into the United States that infringe the Brooks Patent, including,4 but not limited to, Telemark's EC203712000 Cryogenic Refrigerants identified with part number5 310-0001-0-1,311-0001-0-1, and Telemark's Top-Off charge identified with part number 75-1020-6 05 (collectively, the "Telemark Products").7 14. On information and belief, Defendant Telemark manufactures, sells, and offers for8 sale the Telemark Products to third parties with the knowledge and specific intent that they be9 incorporated into and used with, for example, Polycold cryogenic refrigeration systems.

10 15. On information and belief, Defendant Telemark is fully aware of the Brooks Patent.11 Thus far, Telemark has not taken a license for the infringing Telemark Products and, on information12 and belief, has continued to offer for sale and sell the Telemark Products through its corporate13 website and various distributors in reckless disregard of Brooks' patent rights.14 16. On information and belief, by performing the foregoing acts, Defendant has infringed15 and continues to infringe one or more claims of the Brooks Patent, has induced others to infringe the16 Brooks Patent, anellor has contributed to the infringement of the Brooks Patent.17 17. In addition, Defendant has distributed, and continues to distribute, various print18 advertisements in interstate commerce, including to potential consumers, that contain false,19 deceptive, anellor misleading statements about the nature, characteristics, and qualities of the20 Defendant's competing products.21 18. For example, Defendant advertises that the standard gas charges for its TVP units are22 "CFC-Free, Compliant with US EPA requirements." Defendant'S advertising is false or misleading23 because, on at least one occasion, Telemark sold a Telemark Product containing HCFC-22 in24 violation of the EPA 2010 phase-out rules prohibiting the sale and export of new units containing25 ozone-depleting gases. Defendant's advertising is also misleading because the claim "Contains no26 CFCs" in Defendant 's ad may cause reasonable consumers to believe that the product does not hann27 the environment. Since at least one product sold by Defendant contained HCFC-22, an ozone-28 depleting substance, the advertising claim is deceptive.

4 COMPLAINT FOR PATENT INFRINGEMENT.FALSE ADVERTISING AND UNFAIR COMPETmONCase No.


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1 19. Defendant's false, misleading, and deceptive statements, individually and2 collectively, irreparably injure the public and Brooks by deceiving consumers into mistakenly3 believing that Defendant'S products have certain qualities and characteristics that they do not.4 20. Defendant knew or should have known that its advertising claims are false,5 misleading, and/or deceptive, and thus has acted knowingly, willfully, in reckless disregard of the6 truth, and in bad faith.7 COUNT I8 Infringement of U.s. Reissued Patent No. 40,627 under 35 U.S.C. 271 et seq.9 21. Brooks repeats and incorporates by reference each of the allegations contained in

10 Paragraphs 1 through 20 of this Complaint as though fully set forth herein.11 22. U.S. Reissued Patent No. 40,627, entitled "Nonflammable Mixed Refrigerants (MR)12 for Use with Very Low Temperature Throttle-Cycle Refrigeration Systems," reissued on January 27,13 2009. A true and correct copy of the '627 Patent is attached as Exhibit A and incorporated by14 reference.15 23. Brooks owns and has the exclusive right to license the '627 Patent.16 24. Defendant Telemark had knowledge of the Brooks Patent before the filing of this17 Complaint.18 25. On infonnation and belief, Defendant has directly infringed, induced others to19 infringe, and/or contributed to the infringement of one or more claims of the Brooks Patent, both20 literally and under the doctrine of equivalents, by making, using. selling, offering for sale. and/or21 importing products into the United States. including but not limited to Telemark's EC2037/200022 Cryogenic Refrigerants identified with part number 310-0001-0-1.311-0001-0-1, and Telemark's23 Top-Off charge identified with part number 75-1020-0.24 26. On information and belief. Defendant's infringement of the Brooks Patent has been25 deliberate and willful.26 27. As a consequence of Defendant's infringement of the Brooks Patent, Brooks has been27 damaged in an amount not yet determined.28

5 COMPLAINT FOR PATENT INFRINGEMENT,FALSE ADVERTISING AND UNFAIR COMPETmONCase No.


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1 28. On information and belief, Defendant's infringement of the Brooks Patent is on-going2 and will continue to damage Brooks unless enjoined by this Court.3 COUNTD4 False Advertising under Section 43(a)(1)(B) ofthe Lanham Act, 15 U.S.C. 1125(a)(1)(B)5 29. Brooks repeats and incorporates by reference each of the allegations contained in6 Paragraphs 1 through 28 of this Complaint as though fully set forth herein.7 30. Defendant's actions, as described above, constitute false and misleading descriptions8 and misrepresentations of fact in commerce which, in commercial advertising and promotion9 misrepresent the nature, characteristics, and qualities of Defendant'S products in violation of Section

10 43(aXIXB) of the Lanham Act, 15 U.S.C. 1125(aXl)(B).11 31. Defendant's false, misleading. and deceptive statements, individually and12 collectively, are material to a consumer's purchasing decision and are likely to divert consumers13 away from considering or purchasing products from Brooks.14 32. Defendant's false, misleading. and/or deceptive statements, individually and15 collectively, have caused, and if not enjoined, will continue to cause actual and irreparable injury to16 Brooks.

COUNTIDUnfair Competition With Plaintiff

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Under California Business & Professions Code I I 17200 and 1750020 33 . Brooks repeats and incorporates by reference each of the allegations contained in21 Paragraphs 1 through 32 of this Complaint as though fully set forth herein.22 34. Defendant has engaged in false, misleading or deceptive advertisement. Such acts23 constitute unfair trade practices and unfair competition under California Business & Professions24 Code 17200,17500 et seq.25 35. Defendant's activities described above have at all times been willful and/or knowing.26 36. As a direct and proximate result of the actions ofDefendant described above.27 Plaintiff is entitled to restitution and injunctive relief, and any other remedies allowed by law.28

6 COMPLAINT FOR PATENT INFRINGEMENT.FALSE ADVERTISING AND UNFAIR COMPETITIONCase No.


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1 PRAYER FOR RELIEF2 WHEREFORE, Brooks respectfully requests that judgment be entered:3 A. Declaring that Defendant has infringed and continues to infringe the Brooks Patent;4 B. Declaring that the Defendant's infringement has been deliberate and willful;5 C. Compensating Brooks for all damages sustained as a result ofDefendant's infringement,6 together with prejudgment and post-judgment interest;7 D. Enhancing Brook's damages up to three times their amount pursuant to 35 U.S.C. 284;8 E. Awarding Brooks its costs of suit and reasonable attorneys' fees pursuant to 35 U.S.C. 9 285;

10 F. Permanently enjoining Defendant, pursuant to 35 U.S.C. 283, and each of their agents,11 servants, employees. principals, officers, attorneys, successors, assignees, and all those in active12 concert or participation with them, from further acts of (1) direct infringement, (2) contributory13 infringement, and (3) inducement to infringe the Brooks Patent;14 G. Declaring that the statements made by Defendant in the advertisements as detailed above,15 are false, misleading. and/or deceptive and misrepresent the nature, characteristics, and qualities of16 Defendant's products in violation of 15 U.S.C. 1125(a)(I)(B) and other applicable laws;17 H. Directing Defendant to retract and destroy all advertisements, commercials, and other18 materials, containing: (1) any of the false, misleading, or deceptive statements complained of19 herein; and (2) any false, misleading, deceptive, or disparaging statements regarding Defendant's202122232425262728

products and/or Brooks's products;I. Requiring Defendant to account for and pay to Brooks any and all profits arising from the

foregoing acts, and increasing such profits in accordance with 15 U.S.C. 1117 and other applicablelaws;

J. Ordering Defendant to pay Brooks damages in an amount as yet undetermined caused bythe foregoing acts, and trebling such damages in accordance with 15 U.S.C. 1117 and otherapplicable laws; and

K. Awarding such other relief as this Court deems just and proper.

7COMPLAINT FOR PATENT INFRINGEMENT,

FALSE ADVERTISING AND UNFAIR COMPE.TI110NCase No.


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JURY DEMAND2 Brooks requests a jury trial on all issues triable to a jury in this matter.3456789

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Dated: December 1, 20 II~ / l V 7B Y : ~ . / \ ~ ~ CErik R. PuknysFINNEGAN, HENDERSON, FARABOW,GARREIT & DUNNER, LLP3300 Hillview AvenuePalo Alto, California 94304Telephone:(650) 849-6600Facsimile: (650) 849-6666Attorneys for PlaintiffBROOKSAUTOMATION, INC.

8 COMPLAINT FOR PATENT INFRINGEMENT,FALSE ADVERTISING AND UNFAIR COMPETfTlONCase No.


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brooks automation v. telemark

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